Hermès vs. Rothschild
The case involves a dispute between the brand Hermès and the artist Mason Rothschild, who so far created and sold a hundred images depicting the Hermès Birkin bag, digitally covered in multi-colored fur, as futuristic digital works, also known as NFT’s. The pictures are part of an art project of Rothschild called the “MetaBirkin”.
Hermès sued Rothschild and claimed that “Metabirkins brand simply rips off Hermès’s famous Birkin trademark by adding the generic prefix “meta” and that the artist is simply "a digital speculator looking to get rich quick by appropriating the Hermès brand."
Rothschild on the other hand claimed he has the right to depict the bags in his artwork, “just as Andy Warhol portrayed a giant Campbell’s soup cans in his famous pop culture silk screens.” Rothschild is therefore “creating art works that depict imaginary, fur-covered Birkin bags”, stating that “the fact that I sell the art using NFTs doesn’t change the fact that it’s art”.
The New York jury ruled against Rothschild and ruled that the pictures were likely to confuse consumers and therefore that Rothschild violated Hermès trademark rights. The jury awarded Hèrmes 133,000 US dollars based on trademark infringement, dilution and ‘cybersquatting’, a violation that involves registering or using a trademark in bad faith.
The decision is relevant, since it provides (some) clarity on whether brands can be protected in the metaverse, at least in the US, as the jury ruled that the existing (US) trademark laws can protect brand owner’s rights as to NFT’s.
Although there have been no comparable cases in the Netherlands about trademark infringement via NFTs, we do see parallels with rulings that touch the interface between intellectual property rights and freedom of speech. A striking example is a case of the court of The Hague regarding the use of a Louis Vuitton look-a-like bag in a work of art by the Danish artist Nadia Plesner. Although Louis Vuitton sued Plesner for its design rights – not trademark – infringement, Plesner invoked freedom of speech, as Plesner would use Louis Vuitton's fame to convey her socially critical message. The court ruled in Plesner's favor. Plesner's interest in (continuing to be able to) freely express her (artistic) opinion outweighs Louis Vuitton's interest in the undisturbed enjoyment of her property, mainly because Plesner's use of a well-known trademark in a specific art piece primarily serves a functional purpose - to convey a socially critical message (the situation in Darfur) - while it was not suggested by Plesner that Louis Vuitton was actually involved in any kind in that specific situation. Furthermore, the circumstance that Louis Vuitton is a very well-known fashion brand and that some of its products enjoy considerable fame, means that Louis Vuitton must submit to critical use to a greater extent than other design right owners.